Zee Entertainment Enterprises Ltd & Ors v Zeebox Ltd

Permission for survey evidence in a passing-off action depends on a real-value and cost-benefit assessment. The court must assess the survey’s likely reliability and evidential value at the permission stage and reach a definitive ruling; it should not conduct a mini-trial on the apparent merits of the action. A survey should reproduce, as far as possible, the real-world context in which the sign is encountered and should identify the relevant public accurately. Questions that incompletely describe a service or invite respondents to speculate can deprive the results of value. Cultural or linguistic characteristics may justify survey evidence where they create a genuine special feature, but ordinary services and readily understandable signs can ordinarily be assessed by the trial judge. Permission should be refused where any marginal value is outweighed by disproportionate cost.

The appellants brought passing-off and trade mark infringement proceedings concerning their Zee television channels and website and the respondent’s Zeebox television-related application. They sought permission to conduct a full market survey after two small pilot surveys aimed at members of the British Asian community.

Birss J refused permission on 7 June 2013. He considered that the survey might have some value, but was unlikely to be of real value sufficient to justify its cost and the additional trial time. The appeal concerned the correct application of the real-value test in a passing-off case, the relevance of the proposed target audience, the survey’s reliability, and the proportionality of the anticipated expense.

The appeal was dismissed unanimously. Floyd LJ gave the leading judgment. Lewison LJ agreed and added observations, and Elias LJ agreed with both judgments.

1. Applicable test. The principles in Marks and Spencer v Interflora Incorporated [2012] EWCA Civ 1501 and Interflora Inc v Marks & Spencer [2013] EWCA Civ 319 require the court to make a definitive assessment of whether proposed survey evidence is likely to be of real value and whether that value justifies the cost. Reliability is an important part of the assessment. The court should not simply leave admissibility to the trial.
2. No interim merits assessment. The real-value test does not generally require the judge to assess the likely strength of the underlying passing-off case. An inability to prove the case by other means may strengthen an application, particularly where the goods or services are specialised or esoteric, but this does not invite a mini-trial of the merits.
3. Survey design and context. Passing off is a real-world cause of action. Survey conditions should therefore reproduce, so far as possible, the circumstances in which consumers encounter and use the sign. The pilot questions described Zeebox only as an application relating to television. They gave no adequate indication that it was a cross-channel application which did not itself enable users to watch television. The questions consequently invited artificial speculation and contaminated later answers about responsibility for the application. There was no reliable basis on which the trial judge could discount the resulting answers.
4. Relevant public. Judges are ordinarily able to assess the susceptibility of the relevant public to deception, taking account of its characteristics. White Horse Distillers Ltd v Gregson Associates Ltd [1984] RPC 61 was distinguishable because it concerned a distant country, foreign language and unfamiliar commercial practices. The proposed survey also failed effectively to target Hindi or other relevant language speakers.
5. Disposition. The survey’s marginal potential value was outweighed by its significant and disproportionate cost, particularly having regard to the respondent’s weaker financial position. The appellants had other means of proving their case. Permission was refused and the appeal dismissed.

Lewison LJ additionally observed that the ultimate passing-off issue is deception or misrepresentation, rather than merely a propensity to connect the sign with another mark, making the survey’s proposed evidence peripheral.

1. Court of Appeal (Civil Division): Appeal dismissed. The court exercised the discretion afresh and refused permission for the proposed survey evidence under [2014] EWCA Civ 82.
2. High Court (Chancery Division, Intellectual Property): Birss J refused permission on 7 June 2013 to conduct and adduce a full market survey in support of the passing-off claim.